Birds Exotic, Inc.

Trademark Trial and Appeal Board

Jul 6, 2001

No. 75646179 (T.T.A.B. Jul. 6, 2001)

7/6/01
Paper No. 9
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Birds Exotic, Inc.
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Serial No. 75/646,179
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Norman E. Lehrer for Birds Exotic, Inc.
Michael D. Tinyk, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney).
_______
Before Hanak, Hairston, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On February 19, 1999, Birds Exotic, Inc. (applicant)
filed a trademark application to register the mark BIRDS
EXOTIC (typed drawing) for services identified as “retail
store services featuring live pet birds and pet supplies”
in International Class 35.1
1 Serial No. 75/646,179. The application alleges a date of first
use and a date of first use in commerce of May 5, 1982.
Applicant has disclaimed the word “birds.”
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/646,179
2
The Examining Attorney refused to register the mark on
the ground that the mark, when applied to the services, is
merely descriptive. 15 U.S.C. § 1052(e)(1). After the
Examining Attorney made the refusal final, applicant filed
a notice of appeal. Both applicant and the Examining
Attorney have filed briefs, but no oral hearing was
requested.
We affirm the Examining Attorney’s refusal to
register.
The Examining Attorney’s2 position is that “the words,
EXOTIC and BIRDS, are used to describe birds that are
exotic, meaning, birds that are not indigenous to the area
in which they are found. Furthermore, the combination of
“BIRDS” and “EXOTIC” fails to create a unique or
incongruous impression that would overcome the descriptive
meaning.” Examining Attorney’s Appeal Brief, p. 4. The
Examining Attorney attached LEXIS/NEXIS printouts, which
showed that the term “exotic birds” was a commonly used
term to refer to birds and the stores that sell them.
Bird Crazy, a retail exotic-bird store that’s found
its perch. San Diego Union-Tribune, April 11, 1998,
p. C3.
2 The current Examining Attorney was not the original Examining
Attorney in this case.
Ser No. 75/646,179
3
This is a retail and wholesale pet store and [it] has
some of the most exotic birds ever seen. Orange
County Register, March 7, 1998, F7.
The federal government had cracked down on the trade
of exotic birds by then. The Stuart News/Port St.
Lucie News, July 28, 1996, p. E1.
There are ten varieties of exotic birds for sale. The
Charleston Gazette, February 24, 2000, p. 2.
We couldn’t afford to put exotic birds in an aviary
that we built in the center of our store, so we went
to the State Fair and got exotic chickens to fill it.
The Times Union (Albany, NY), October 31, 1999, p. H1.
Pet stores have been warned about a man selling exotic
birds. Knoxville News-Sentinel, April 3, 1999, p.
A10.
The Examining Attorney concluded that “the
transposition of the terms in the proposed mark simply does
not provide enough distinction to require any imagination
to associate the services with the proposed mark, and
therefore, create a merely suggestive mark.” Examining
Attorney’s Appeal Brief, p. 10.
Applicant, on the other hand, maintains that the mark
is not merely descriptive. “The mark simply does not
provide the consumer with enough information to provide him
or her with an essential understanding of Applicant’s
services.” Applicant’s Appeal Brief, p. 2. Because
imagination would be required to understand the mark in
relation to the services and the lack of a competitive need
Ser No. 75/646,179
4
by others to use the term BIRDS EXOTIC, applicant submits
that its mark is not descriptive.
Before we discuss the descriptiveness issue, we must
address a potential problem in the record. When the
application in this case was filed, it requested “that said
mark be registered in the United States Patent and
Trademark Office on the Principal Register established by
the Act of July 5, 1946, as amended particularly pursuant
to 15 U.S.C. § 1052(f).” (Emphasis added). The
application also contained the following statement:
The undersigned believes that the mark has become
distinctive, as applied to applicant’s services, by
reason of substantially exclusive and continuous use
thereof as a service mark by the applicant in commerce
for more than 16 years prior to the date of filing of
this application.
In the first Office Action, the Examining Attorney
advised applicant that it had the option to seek
registration on the Principal Register under Section 2(f)
with a disclaimer of the word “birds.” The Examining
Attorney included language for a claim of distinctiveness.
However, applicant responded to the first Office Action by
disclaiming the term “birds,” but then arguing that the
term BIRDS EXOTIC was “obviously highly suggestive,” but
not merely descriptive. Response dated December 17, 1999,
p. 2. Subsequently, applicant has argued that it “most
Ser No. 75/646,179
5
strenuously but respectfully disagrees” with the Examining
Attorney’s position that the mark is descriptive.
Applicant’s Appeal Brief, pp. 1-2.
Neither the Examining Attorney nor applicant have
referred to the request for registration under Section 2(f)
contained in the application as filed. Indeed, applicant
has consistently maintained that the mark is suggestive.
Therefore, we conclude that the request for registration
under Section 2(f) was either a typographical error or
subsequently withdrawn by applicant. In either event, we
will respond to the arguments of applicant and the
Examining Attorney on the issue of descriptiveness without
consideration of Section 2(f).3
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). A term may be held descriptive
even if it only describes one of the qualities or
properties of the goods or services. In re Gyulay, 820
3 We note that, other than the claim of sixteen years use, no
evidence concerning acquired distinctiveness was submitted by
applicant.
Ser No. 75/646,179
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F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). We
look at the mark in relation to the goods or services, and
not in the abstract, when we consider whether the mark is
descriptive. Abcor, 588 F.2d at 814, 200 USPQ at 218.
Applicant argues that “imagination, thought and
perception must be exercised in order to reach a conclusion
as to the nature of the services” and that “[o]ne would not
know, for example, whether Appellant sells live birds or
books or films about birds.” Applicant’s Appeal Brief, p.
2. Considered in relation to applicant’s retail store
services featuring live pet birds and pet supplies, as we
must do, there can be no doubt but that the term BIRDS
EXOTIC at least merely describes the fact that applicant
sells exotic birds and supplies for exotic birds.
Here, the Examining Attorney has submitted ample
evidence that the term “Birds Exotic” is highly
descriptive. Applicant concedes that the term “exotic
birds” is merely descriptive. Response dated December 19,
1999, p. 2 (“If Applicant was attempting to register the
mark EXOTIC BIRDS, one would have to agree the mark was
merely descriptive”). In addition, the Examining
Attorney’s printouts confirm that the term “exotic birds”
is commonly used to refer to birds and pet stores featuring
Ser No. 75/646,179
7
exotic birds.4 Examples include: “retail/exotic bird
dealer,” “store carries 70 varieties of food for exotic
birds,” and “[t]his is a retail and wholesale pet store and
has some of the most exotic birds ever seen.” Thus, the
term is highly descriptive of a pet store that sells exotic
birds and supplies for exotic birds.
Applicant argues that there is no need for competitors
to use the term BIRDS EXOTIC in identifying their services.
Applicant relies on Aluminum Fabricating Co. v. Season-All
Window Corp., 259 F.2d 314, 119 USPQ 61 (2d Cir. 1958) and
No Nonsense Fashions, Inc. v. Consolidated Food Corp., 226
USPQ 502 (TTAB 1985) for support of its proposition that
that there are numerous other terms that competitors could
utilize, and registration of its mark would not make it
difficult for other businesses to describe their products.
These cases and applicant’s arguments do not convince us
that its mark is not descriptive of its services. First,
4 We also note that Federal law and regulations define and refer
to “exotic birds.”
16 U.S.C. § 4901 – “The Congress finds the following: (1)
In addition to habitat loss and local use, the international pet
trade in wild-caught exotic birds is contributing to the decline
of the species in the wild.”
50 CFR § 15.3 – “Exotic bird means any live or dead member
of the Class Aves that is not indigenous to the 50 States or the
District of Columbia, including any egg or offspring thereof.”
7 CFR § 1945.154 – A nonfarm business enterprise may
include, but is not limited to, such enterprises as custom farm
work on other farms, raising earthworms, exotic birds, tropical
fish, dogs and horses for nonfarm purposes. . . .”
Ser No. 75/646,179
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the marks in Aluminum Fabricating (SEASON-ALL for aluminum
storm doors and windows) and No Nonsense (SHEER ELEGANCE
for hosiery products) were not as highly descriptive of the
goods as applicant’s mark (BIRDS EXOTIC for retail store
services featuring live birds) is of the identified
services. Obviously, applicant’s identification of
services would include the sale of exotic birds. Secondly,
there is no rule that the simple transposition of words
changes a descriptive term into a non-descriptive term.
“The mere transposition of words is generally insufficient
to create trademark rights in an otherwise common
descriptive term or designation.” In re Dairimetics, Ltd.,
169 USPQ 572, 573 (TTAB 1971) quoting In re Vasco Metals
Corp., 154 USPQ 191 (TTAB 1967). The rule has equal
applicability to merely descriptive terms. Third, the
transposition of the words in this case does not create a
term with a different meaning or commercial impression.
While “season all” and “all season” may have different
impressions, “exotic birds” and “birds exotic” have the
same commercial impression when applied to retail pet store
services featuring live pet birds, i.e., that the store
sells exotic birds. Finally, there is no evidence to
support applicant’s argument that its competitors would not
need to use the term “Birds Exotic.” Certainly,
Ser No. 75/646,179
9
competitors would need to use the term “exotic birds.”
While the Examining Attorney did not believe that there was
a need for competitors “to use the exact wording BIRDS
EXOTIC” (Examining Attorney’s Appeal Brief, p. 9), the term
“exotic birds” unequivocally describes applicant’s
services. Competitors would need to use these words in
various ways to refer to their services, and it is not
clear why they would not, on occasion, transpose the terms
for either the sake of variety or to emphasize the general
term “birds” before the more specific term “exotic.”
However, even if they would not, since the terms “exotic
birds” and “birds exotic” would be synonymous, applicant’s
term is merely descriptive for its retail store services.
Decision: The Examining Attorney’s refusal to
register the mark BIRDS EXOTIC on the ground that it is
merely descriptive of the involved services is affirmed.